Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Neil J. Wilkof, Annsley Merelle Ward, Nicola Searle, Eleonora Rosati, and Merpel, with contributions from Mark Schweizer. Read, post comments and participate! E-mail the Kats here

The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Pavis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Friday, 30 October 2015

Will IP matter? The question seems to arise in the wake of every new disruptive technology. It is no surprise, therefore, that it is being asked in connection with 3D printing, where digital content, easily distributed over the network, is married to the potential for making a myriad of objects in any location where a 3D printer can be operated (think: your home). If the concern a decade ago was how to regulate the downloading of a movie or a song, today it is how to regulate the downloading of a digital file containing all the instructions to make a perfect copy of a product, down to its trade mark. Recalling the discussion a decade or two ago regarding the downloading of digital songs and movies, suggestions are made for various technological solutions. More generally, calls are made for a cultural make-over, where the consumer will habitually come to prefer the genuine product, e.g., using authorized digital instructions and the correct product materials, within the context of 3D printing.

This Kat is all in favour of finding ways by which people will prefer the genuine IP thing. With all due respect to Charles Duhigg and his enthusiasm for fashioning habits, this Kat is not very optimistic about changing collective habits in this manner. Perhaps the more fruitful way to view the problem is to focus on business models in the 3D space. After all, we have seen from the response by the music and film industries that it ultimately it may make more sense to seek business models by which their customers will be prepared to pay for genuine digital contents. This Kat recognizes that 3D printing is a complex ecosystem with more than a few moving parts, such that there is no such thing as a “single business model” that will encompass all involved. Still, it is worthwhile to consider one possibility, namely the potential role of fulfilment centres.

To do so, we need to retreat a bit from the widely-expressed view that 3D printing will become the ultimate form of disintermediation, whereby ultimately each of us will have one or more 3D printers in our home for making endless products to our heart’s consent. Under this view, the customer becomes the manufacturer, and the role of entities to sell and distribute products to us, be it Wall-Mart or Amazon.com, is significantly diminished. This Kat remains skeptical that a large swathe of the population will want to engage in making things in their spare time, at the expense of exploiting the home as a source of entertainment and information. Still, many persons will be attracted to 3D printing as a means for enabling the making of goods suited for one’s specific requirements, even if such production will not take place within the confines of one’s home.

So where might this 3D printing take place? The answer—at a commercial fulfilment centre, by which we mean at the physical site of an entity, where a customer will be able to select the desired product, and the fulfilment centre will then proceed to make it on-site for the customer. True, the fulfilment centre will also benefit from this arrangement as form of middleman, but in so doing it will provide a desired service for a customer, who wants to benefit from 3D printing, but not at home.

While the image of 3D printing taking place at a fulfillment center is less romantic than the view of every man and woman being a craftsman at home, it seems to this Kat such a business model will more favorable for protecting IP rights. This is because a fulfillment center will likely have a much greater incentive to ensure that its 3D printing operation is fully IP compliant. Because it is in business of commercially facilitating 3D printing for customers, a fulfilment centre can ill afford to be identified as a source of unauthorized production files or substandard, or inappropriate, production materials. After all, the fulfillment center has a business reputation to protect, in exchange for being able to commercially benefit from the 3D printing ecosystem.

Moreover, it may be significantly easier to enforce one’s IP rights vis a vis a fulfilment centre than to try and go after a legion of miscreants at home for alleged IP violations. We have seen how problematic enforcement at this personal level can be in connection with downloading digital songs and films, either due to privacy concerns or by virtue of an explicit statutory exemption. These challenges might be materially reduced if 3D printing becomes less a matter of home production and more the business of commercial fulfilment centres. Ironically, perhaps, IP owners might well hope that, despite the more enthusiastic ambitions of 3D printing advocates, it never really becomes ubiquitous in the home.

On Wednesday, fellow Kat Nicola the Katonomist wrote this thoughtful if provocative piece on lookalike packaging -- a subject on which economists, lawyers, consumers. brand owners and their competitors have not always shared identical views. This Kat was a little surprised that Nicola's post did not prompt an immediate discussion, but he has now received the following response from John Noble of
British Brands Group, an organisation representing brand manufacturers and which, as the small print at the bottom of its logo suggests, has been speaking out for 20 years. In keeping with the BBG's tradition of speaking out, John writes as follows:

It is disappointing when things don’t meet expectations, particularly
after years of consistency. In this instance it is the recent post from the Katonomist that was, rarely, far from insightful. Some aspects were
simply wrong. I refer to “Living together: the symbiosis of lookalike
packaging”.

There is a level of unconventional thinking here that suggests she is
either being mischievous or that someone else wrote the post – a lookalike?
Perhaps she’s just a confused Kat?

Terminology

The terminology she contributes, presumably to be helpful, is not
correct:

-Products carrying supermarket names, or affiliated
to a supermarket, are indeed called “private labels” or “own labels” and we use
these terms ourselves. Where these are distinctively packaged products they
compete on their own merits and are not implicated, affected or otherwise
involved in concerns over similar packaging. It is wrong to conflate the two;

- “Lookalikes”,
“copycats” or “parasitic copies” are terms that refer to products that mimic
the packaging of familiar brands in order to steal sales. They have a further
defining feature in our definition – they are illegal under existing law. Many
such copies are supermarket products but this is not exclusively the case.
Another manufacturer may well produce a copy.

The term “parasitic copying”, the preferred description of the British
Brands Group, is not some pejorative term created for manipulative lobbying
purposes but a recognised ‘wrong’ in unfair competition law on mainland Europe.
We use it as it is both descriptive and highlights the contrast in available
effective remedies between the continent (good) and the UK (bad).

Harm to brands

The Kat argues that parasitic copies, far from harming brands, actually
grow the market. This is new thinking. It would be a point to debate were she
talking about supermarket products but she is talking about parasitic copies
(judging from the title of her piece).

To survive and thrive, branded products must add value and benefits to
the individual over and above the commodity alternative. They must then
communicate that added value through differentiation and be distinctive on
shelf to draw shoppers’ attention. The enemy of branding is commoditisation.
Where all products in a category look the same, the signal to shoppers would
be that they are the same. Shoppers will be unable to distinguish
between them and see no reason to pay more for any added value or benefit.
There would be less incentive for the brand owner to innovate or build
reputation as the benefits could not be communicated from the supermarket shelf.

Ironically, evidence cited by the Kat that parasitic copies don’t harm
brands is actually evidence of harm. This is research she knows well as she had
some responsibility for it as an Intellectual Property Office (IPO) employee. For example, one of the IPO’s conclusionsfrom this research is that “Consumers are more likely to make mistaken
purchases if the packaging of products is similar and there is strong evidence
that consumers in substantial numbers
have made mistakes” [emphasis added]. This is a consistent finding over two
decades of research.

Showers can be fun even when there's no gel ...

When a shopper buys a copy by mistake, there is a clear and direct loss
and harm. Despite the Kat’s argument to the contrary, this does look like a
zero sum transaction. Either one product or the copy is purchased. There is no
evidence that someone who never buys, say, shower gel suddenly enters the
market and buys on seeing packaging that looks like a familiar brand, or that a
shower gel buyer, on seeing a copy, buys two packs instead of one. There is
also no evidence that a shower gel user showers more often, and thereby uses
more gel, driven solely by similar packaging. Such effects would indeed grow
the market but just don’t seem plausible.

Choice

The copy does not increase choice, as the Kat argues. The packaging
suggests the product is the same so is no choice there. The copy may well be
cheaper but that also does not increase choice of price. Copies are rarely
cheapest on the market and the same product would be just as cheap, if not
cheaper, were it packaged legally and distinctively. It is worth remembering
that it is the retailer that controls the price of both the original and the
copy. We have always made it plain that brand owners do not seek fines or
damages. They just want illegally packaged products re-packaged legally and
distinctively and returned to the market. This would preserve both choice and
competition.

Category and brand cues

The Kat, worryingly, does not distinguish between category and brand
cues. She argues that similar packaging makes shopping easier, quoting the
example of different milk top colours to denote full fat, skimmed and
semi-skimmed. These are ‘category cues’, do indeed help shoppers and are
generic (i.e. used by many). Brand owners have no issue with these and indeed may
use them themselves. They are very different from brand cues, such as red
labels for Coca-Cola, the unusual asymmetric pack shape of Head & Shoulders
or the tubby, dark glass container with a yellow top that signals Marmite. It
is the brand cues that the parasites copy and which are at issue.

It is perhaps worth distinguishing between packaging that tells the
truth and packaging that lies. If a product is packaged to look like a familiar
branded product, has identical qualities and is made by the same company, then similar
packaging would indeed be helpful to shoppers and would be lawful. Shoppers can
trust the packaging signals and choose whether to buy accordingly. An example
might be a branded product that is also supplied as a supermarket product as
was the case with Weetabix and Asda’s Wheat Bisks, mentioned in thePenguin v Puffin case (1997).

In contrast, a product packaged to look like a familiar brand but without
the same qualities and/or not made by the same company lies and sends wrong, highly
misleading signals to shoppers. In grocery, shoppers make decisions fast and
rely particularly on colour and shape of packs to inform their choices. The IPO
research confirmed a correlation between similarity of packaging and people’s perceptions
that the products came from the same company and/or have higher quality. It
also confirmed that similar packaging increases people’s likelihood of buying
the product.

That’s the nub. Parasitic packaging – which is packaging that lies and
is illegal – increases sales, whether through more mistakes or increasing
artificially the appeal of products. It is subtle, dupe marketing, is
persistent and is going unchallenged.

Remedies

The Kat is wrong to imply that brand owners want Government to
intervene and fight their battles for them. The truth is the opposite. Brand
owners want effective tools to deal with the problem themselves. In the UK
there are three potential remedies, all with flaws:

-IP rights may look to offer sufficient
protection on paper but using them in practice is challenging. This is due to
the high evidentiary threshold required by courts, the difficulty of proving
confusion (survey evidence is often not accepted) and difficulties in proving
misrepresentation.

There are signs
that passing off in particular is moving against brand owners, with the long-standing
principle that someone should not seek to take another’s goodwill being
replaced with the view that copies can “live dangerously” if they keep a safe
distance away (Specsavers v ASDA, 2012). This was followed in the Moroccanoil v Aldi case and amounts to a judicial sanction of “living dangerously”.

Back in 2006, the
Gowers Review, commissioned by Government, found that brands were not well protected in the UK and
recommended that the new Consumer Protection from Unfair Trading Regulations
(CPRs) be given a chance to work.

-The CPRs provide broader protection than IP
rights in making it unlawful to mislead over a product’s quality or equivalence
and thereby influences the purchasing decision. However in the UK civil
enforcement lies under the control of Trading Standards, not brand owners.
Interestingly Government sees one enforcement action in seven years and
statements from Trading Standards that they do not have the resources and will
not enforce as strong, unchallengeable evidence that enforcement is effective
as required in the underlying Directive;

-Provisions against misleading comparative
advertising are also relevant, as parasitic copies make a strong implicit comparative
claim: “I am like the brand”. A lawful comparative claim must be objective and
quantifiable, but the copy’s claim is broad, inferring it is like the brand in every respect, including ingredients,
manufacture, reputation and image. While the Misleading Comparative Advertising
Directive requires companies to be protected from such misleading advertising, in
the UK only Trading Standards may enforce, not brand owners.

The UK Government has just decided not to grant brand owners civil
enforcement powers under the CPRs. It fears unintended consequences and an
increase in litigation. The potential to stamp out an illegal practice doesn’t
seem to carry weight.

As a result, the CPRs will not have the effect anticipated in the
Gowers Review and are unlikely to meet the enforcement performance threshold
required by the Directive. That leaves the big underlying question unanswered:
how are legitimate brand owning companies in the UK to have effective tools to protect
themselves and their customers against illegal packaging? That ball remains
firmly with Government.

The Kat, at the start of her post, states she was compelled to put in her
two cents worth. She got her pricing just about right.

Wednesday, 28 October 2015

The Del Boy referral: Tommy Hilfiger LicensingThe Czech Supreme Court has referred two questions to the CJEU for preliminary ruling. Both are concerned with the remedies rights holders might have against intermediaries who lease stalls to market traders. The most famous fictional English market trader was of course Del Boy Trotter, whom the IPKat suspects would not have been a reader of this blog, other than to see what loopholes might exist in IP law. Many thanks to Axel Paul Ringelhann for alerting the IPKat to this referral. The UK government has set a deadline for comments of November 9. The two questions are as follows:

Not all market traders have offices in New York & ParisPhoto: Karen Roe under CC by 2.0

"Is a person with a lease of premises in a market, who provides stalls and pitches on which stalls may be placed to individual market-traders for their use, an intermediary whose services are used by a third party to infringe an intellectual property right within the meaning of Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights?"Is it possible to impose on a person with a lease of premises in a market, who provides stalls and pitches on which stalls may be placed to individual market traders for their use, measures, as provided for in Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, under the same conditions as those formulated by the Court of Justice in its judgment of 12 July 2011 in Case C-324/09 L’Oréal and Others v eBay and Others with regard to the imposition of measures on the operators of an online marketplace?"

Making Available Right: a paper and an eventDo music right-holders who grant licences to digital platforms actually own the right to make the work available? That rather arresting question is at the heart of a paper written by Fiona McGugan. The paper, which is a study of this often-neglected right, is available for download here.But wait, there's more. An event entitled "Creators' Rights In The Digital Landscape" has been organised in the University of Westminster by the Musictank group (where Fiona is an LLM student) around this topic. It will be held on November 10 at 6:30 pm, immediately following another event of much interest to music licensing fans (see below). Details and booking (for which IPKat readers can claim a discount by using the code CRITDL1115) can be found here.

Music Licensing MasterclassThe University of Westminster is hosting a (free) Masterclass on Music Publishing Agreements, which is the first in a series of three master classes in entertainment law, given by Robert Allan, Associate Fellow of the Centre for Law, Society and Popular Culture. Robert formerly practised as a music talent lawyer and has negotiated contracts on behalf of artists such as Mike Oldfield, Dire Straits and Wham!, so it's safe to say he knows his way around a publishing agreement, and that he can probably teach a trick or two to even the most experienced practitioner. (For the record, this Kat would like to clarify that the exclamation mark in "Wham!" is part of the band's name, rather than being an indication that he is overcome with hysteria and excitement on recalling the duo.)As mentioned in the preceding item, the first class is on November 10, and conveniently is at 5:30, allowing IP enthusiasts to indulge themselves royally by attending Robert's masterclass followed by the Musictank event.The master class series is free with registration, and full details can be found here.EU Customs Enforcement: the Annual Report is outWant to know how many articles were detained by customs authorities at the EU borders in 2014 based on IP rights? Which country, with a measly 131 detention cases (compared to Germany's 20,719 cases) nevertheless detained one in seven of all items detained EU-wide? The answers to these questions (35.5 million items, and Malta), along with dozens of other essential facts, statistics and trends from the world of customs enforcement, can be found in the latest Annual Report (PDF here), released today. For readers short on time, the highlights are outlined in the press release here.

Recent discussions on "lookalike" or "parasitic" packaging, covered in this post by guest Kat Darren Meale, have compelled this Kat to put in her two cents. Lookalikes are symbiotic, not parasitic. Mainstream brands and lookalike private labels co-exist in a balanced environment, not one in which private labels harm mainstream brands.

But first a note on the choice of terminology. Proponents of stronger regulation against private labels determine them 'parasitic packaging,' 'copycats', 'ghost brands', and 'knock-offs.' All inherently pejorative. Opponents of stronger regulation tend to use 'lookalikes', 'private label' and 'generic' for similar reasons. All fairly obvious use of rhetoric to manipulate the policy narrative. As you might imagine, I'm going for the latter options.

Clarke's Clown Fish by Shek Graham

For a relationship to be parasitic, the parasite must live off the host to the host's detriment. There is no evidence that lookalike packaging systematically damages mainstream brands. Instead, the relationship is commensal where, "one organism benefits and the other is not significantly harmed or helped." Lookalikes don't benefit their hosts like clownfish in the anemone, but they're not vampire fish either (I'll save you the pain of a photo.) A more apt description is that they're the egrets foraging amongst the cattle - the cattle stir up insects while grazing and the egrets feed away. (Another example is vultures and lions, but that didn't quite create the image I had in mind.)

Canned Peaches by Mike Wilson,
The intended use for mason jars..

The argument brands are harmed by lookalike starts with the idea that brands exist in a zero sum game. A classic economic approach to branding is that it is simply a means of jockeying for market share. If this is the case, then one brand's gain in market share is another's loss (explored in this paper by Anocha Aribarg et al.) Lookalike brands would therefore be parasitic. Not convinced.

A zero-sum game is a cynical approach to the economic role of branding. Instead, branding and packaging innovation can grow markets. For example, the markets for bottled water and coffee shops (Starbucks), have grown primarily due to branding and marketing innovations. Theories now recognise that branding and marketing contribute to economic growth and should be considered, controversially, a type of innovation (see this paper by Carol Corrado and Janet Hao.) If branding is growing markets, then lookalikes may simply grow the lower end of the market.

There is also an efficiency argument here - similar packaging for similar products makes shopping more efficient. If packaging is dramatically different for similar products, it will be difficult for the shopper to identify the correct product. Milk is the classic example as there are standard coloured bottle caps to indicate skimmed, semi-skimmed or full-fat milks. In a dystopian yuppie nightmare, wildly different packaging may make it difficult to identify the correct organic, semi-skimmed, grass-fed milk. Similar packaging, and things like category colours, make identification and shopping faster.

"Milk glass" by Stefan Kühn

Aha, consumer confusion! Not necessarily. There are all sorts of cool studies on this (great literature review in this report by Phillip Johnson, Johanna Gibson and Jonathan Freeman.) We shop and make decisions quickly. But consumers aren't often 'fooled' by lookalike brands. This fairly cool (eye tracking!) report by Mountainview Learning finds,

"There is no difference between the scores for the key brand when it is placed next to a copycat and when it is placed next to a non copycat product. Interestingly, there is a difference between the key brand and the copycat brand on both metrics, suggesting that participants do no[t] confuse the two at this explicit level, where they have time to make a decision."

(Surprise! I've used a paper that supports my arguments.) The report does note that its research fails to address some of the questions it sought to, but this is not uncommon. Natural experiments, Randomised Control Trials (RCTs), surveys and other techniques may not be feasible. It's very difficult to conclusively prove either way the relationship all of these variables. As is often the case in IP, the challenge is comparing the factual to the counterfactual.

Ruby Red Glitter Comparison by Jennifer A.

Lookalike brands and products also increase the variety of products on the market. (Of course, copying the product is not the same as copying the brand.) While more is not always better, consumers benefit from increased choice in terms of quality and pricing. (The internet obsession with makeup 'dupes' comes to mind.) Additionally, lookalike brands can encourage innovation. Brands, keen to differentiate themselves, may create new products and packaging to stay ahead of followers. Innovation is good.

Some sympathy should be retained for brands as private labels put them in an awkward place. Their biggest customers, namely supermarkets, often enjoy a six-month lead between pre-viewing products, and products hitting the shelves - plenty of time to work on the lookalike. Brands enjoy no such similar benefit. It must be frustrating. Pursuing lookalikes means pursuing their biggest customers - no wonder brands prefer government intervention.

Continuing with the biology analogy, the focus should be on the wider ecosystem. Instead of concentrating on the relationship between brands and lookalikes, the whole economy (consumers, retailers, tax revenues, etc.) should be considered. Changes impacting the regulation of lookalikes could significantly expand the strength and scope of trademarks. Darren's post examines (not favourably) arguments that changes may be an inappropriate use of government resources. Dispute is best described as a commercial, not consumer issue. Government interventions could be anti-competitive.

Maintaining a healthy balance between brands and lookalikes, with the considerations of consumers, is important. Brands, and their trade marks, are some of the most valuable IP out there and flourish in the current environment. Lookalikes are not killing off their hosts. Commensal, not parasitic.

Us Kats have an incredibly sophisticated food palette, and not just any slop will satiate our food-based requirements. As such, this Kat enjoys his food-based litigation, especially in the remit of intellectual property. Recipes are one form of literary grandeur that faces Lady Copyright's fickle nature more often than not, and a recent decision in the US Court of Appeals for the Sixth Circuit was no exception.

Some tomato-based things can be original

The case of Tomaydo-Tomahhdo LLC v George Vozray et al, Case No. 15-3179 (available here), dealt with the restaurant Tomaydo-Tomahhdo, and a subsequent cookbook bearing the restaurant's eccentric name, started by restaurateurs Rosemarie Carroll and Larry Moore. The pair developed the restaurant into a success, which was largely attributed to its great food (unsurprising in the restaurant business, one would think) developed by Mr. Moore. Recipes were only included in the restaurant's menu through rigorous trial and error, using test groups to trail new recipes before their inclusion. Some years later the pair split from the business, with Ms. Carroll acquiring Mr. Moore's stake in the company, along with any and all recipes and other related materials. Mr. Moore then went on to start a new restaurant venture, called Caterology. As said above, Ms. Carroll compiled a recipe book of dishes served at Tomaydo-Tomahhdo. Ms. Carroll then accused Mr. Moore of copyright infringement in allegedly using recipes at his new restaurant.

At first instance the cookbook was seen as not protected by copyright. In her judgment Judge Gaughan saw that "Although copyright protection may extend to a recipe book or cookbook to the extent it is a compilation, the copyright protection afforded to compilations extends to the “order and manner of the presentation of the compilation’s elements, but does not necessarily embrace those elements"". What Ms. Carroll had argued was a copying of the recipes themselves, not their arrangement, which would not fall under the remit of copyright. A copying or use of the recipes would not be copyright infringement, only the expression of those recipes.

The Court of Appeals agreed with Judge Gaughan. The judges saw that, as it has been firmly established, compilation works, such as recipe books, will generally not be protected by copyright unless "...the collection and assembling of pre-existing materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original authorship". Ms. Carroll argued that, as Mr. Moore had conducted his trial-and-error process and the recipes had been arranged and compiled in a very specific way, the book would be original. The Court disagreed, focusing on what is unoriginal rather than what would be original.

Ginger was not a fan of this new 'fruit'

Judge Donald, handing down the majority judgment, quickly determined that recipes, as was decided at first instance, did not enjoy copyright protection. The recipes were deemed to be pure factual statements and sets of instructions, and thus not protectable. He did, however, discuss that recipes could potentially be seen as original, so far as the author or authors "...lace their directions for producing dishes with musings about
the spiritual nature of cooking or reminiscences they associate with the wafting odors of certain
dishes in various stages of preparation". Clearly, should the author add more substance to a recipe than pure step-by-step instructions, it could be considered original, although Judge Donald gave no indication as to the requisite degree of 'musings' needed. Ms. Carroll's argument as to the originality of the recipes' compilation was also rejected, since no evidence was given to this fact, but only in the creation of the recipes themselves. As a result the book was deemed to not be protected by copyright, and the District Court's decision affirmed.

Recipes are incredibly difficult to protect, and without much added substance to the recipes themselves they will fail the test of originality. Many chefs and food creators would undoubtedly love legislation allowing the protection of recipes, but it seems highly unlikely that that would be the case any time soon.

Tuesday, 27 October 2015

Eagle-eyed readers of this weblog may have spotted that today the IPKat notched up its 16 millionth page view. Once again the IPKat, Merpel and all the blog team, both perma-Kats and guests, would like to express their gratitude for the amazing support and encouragement that this blog has received since its inception in June 2003.

Without the positive and often critical contributions of our readers, the handy tip-offs, the steady flow of fascinating judicial decisions and the constant emergence of new IP-related problems, this weblog would have been very much the poorer.

In looking forward to clocking up future milestones, the IPKat's team want to assure all readers that there is no question of the Kats resting on their laurels: they will continue to work hard to maintain and improve the standard that has earned the support received so far.

Monday, 26 October 2015

Are you creating or disseminating information about IP? This year's IP Publishers and Editors Lunch on Wednesday 25 November is starting to fill up nicely, with people travelling from France and Germany to join this IPKat-led event, kindly hosted in the London office of Veale Wasburgh Vizards. We're up to 25 registrants already and hope to beat the 50+ who came last year. Keynote speaker this year is fellow blogger, editor and IP commentator Peter Groves. So, if you are involved in any facet of IP publishing, editing, blogging, press-releasing or information production and think this event might be for you, just click here for details. It's fun -- and it's free!

When in Rome ... "The Geographical Names Conference: Protecting and Enforcing Geographic Names, GIs, Trademarks and Domain Names" is a conference that is very close to this Kat's heart. He was closely involved with it in the planning stages and, were it not for post-retirement family commitments, he would have been participating in it too. It's run by the International Trademark Association (INTA) and will be held in the beautiful city of Rome on 10 and 11 December. Incidentally, it's not a US event or a European one -- its scope is international, with participation from major international agencies and institutions as well as representatives drawn from business and the professions. Do check out the programme here. The early registration discount expires this coming Friday, 30 October so, if you know you'll be going, why not sign up now and save yourself some money?

Angela Merkel and a couple of Greek politicians

Around the weblogs 1. "10 points to look for in a draft agreement", offers Mark Anderson of IP Draughts (or maybe that should be 'Drafts' ...) -- though as usual Mark delivers a little more than he promises, in a piece honed for the special interests of an IP readership. On the Class 46 European trade mark blog, Tomasz Rychlicki relates the challenge facing Poland today as it eases itself into a new opposition procedure for trade mark applications, to replace the cumbersome and ineffective ex officio examination of all applications on absolute and relative grounds for refusal. On the same blog, and in somewhat lighter vein -- though with overtones of great seriousness -- is guest Kat Nikos's post on the use of PLAYMOBIL characters as a means of depicting social comment and the possible effect of that use upon the brand itself.

Fancy a little paclitaxel ...?

Around the weblogs 2. So far as this Kat is concerned, the blog of the month is "For Pete's Sake! The tribulations of an honest not-for-profit self-publisher", which you will find on the 1709 Blog here. The Pete in question is Peter McDonald, a thoughtful and highly articulate New Zealander whose tale will resonate with many a reader who has sought to do the right thing and come up against the law or, worse, those who invoke it. Elsewhere the SPC Blog introduces readers to a bold attempt to extend a patent for paclitaxel (a.k.a. Taxol) for preventing restenosis [a recurrent narrowing of a blood vessel] by trying to persuade the UK Intellectual Property Office that there was no difference between a medical device and a medicinal product -- which, for most of us, there isn't. Finally Aistemos picks up the work currently being done in mapping and visualisation by the Oxford Internet Institute and points to its possible relevance to IP analytics.

Revised Guidelines for Examination. The European Patent Office has announced the revised version of its Guidelines for Examination, which will apply as from 1 November 2015. Until then, the November 2014 edition of the Guidelines remains valid. You can check out the Revised Guidelines here (Katpat to Chris Torrero for the link).

The weeks roll by and readers are as busy as ever, which means that opportunities for missing Katposts are all too often lost. Fortunately, via the wonderful efforts of Kat colleague Alberto Bellan, here comes the 69th weekly round-up of the previous week's substantive blogposts. This invaluable service has saved our readers a lot of time and frustration when they've been absent or over-committed during the previous week and are now all hot and bothered about what they might have missed. Last week's posts lined up just like this:

* The 10 Commandments of IP Dispute Resolution: a Kat speaksIPKat blogmeister Jeremy was invited to speak at a
dinner gathering of TIPLO (The
Intellectual Property Lawyers' Organisation) in The Old Court Room, Lincoln's
Inn. The title of Jeremy's thoughts on the subject: "The 10 Commandments
of IP Dispute Resolution". Divine!

* BGW: a pointless reference over a meaningless word?Jeremy reports the Court of Justice of the European
Union's (CJEU) ruling in Case C-20/14 BGW Marketing- &
Management-Service GmbH v Bodo Scholz. The question on which the referring
court sought guidance concerned likelihood of confusion between an earlier
trade mark and another later sign constituting of the first's initials.

* Passing off at common law and statutory passing off: is there
a difference?Most IP law is anchored in long-established legislation,
such that the metes and bounds of these laws are subject to the rules of
statutory construction in the particular jurisdiction. One of the most notable
exceptions is the passing off right under English law, which is still a
creature of the common law. Against
this framework, an interesting question arises in comparing the scope of the
passing off right, when it is based on statute, with the right at common law.
Is one more flexible than the other with respect to the subject matters
covered; is one better positioned to take into account changing circumstances
over time? Over to Neil ...

* Coty v Stadtsparkasse: BGH rules in the wake of CJEU decisionOn past Wednesday, the German Bundesgerichthof ruled that a
bank is obliged to disclose the identity of the holder of an account into which
the proceeds of the sale of a counterfeit product were deposited to the owner
of the counterfeit trade mark. The dispute had led to a referral to the
CJEU, which was decided on 16 July 2015 (Case C-580/13Coty Germany GmbH v
Stadtsparkasse Magdeburg, on which see the Katpost here). Mark tells all.

* IP in the Fashion Industry 2015: Part 2Next to speak was solicitorRosie
Burbidge, who updated the audience on copyright and design developments
in the fashion field. The following speaker was Chris Hoole,
who talked about a spin-off topic from the epic litigation between Interflora
and Marks & Spencer over keywords [for a flavour of which, check out
the IPKat here] --
the concept of "negative matching".

* IP in the Fashion Industry 2015: Part 3Annabelle Gauberti (Crefovi, President of the IALCI)
covered employment and labour law, distribution and agency, finance and other
issues which are as important as IP in the field of fashion. Solicitor Antony
Gold then took the stage, taking a look at the practical side of IP
fashion dispute resolution. Finally, Judge Melissa Clarke, a Deputy Judge
of the Intellectual Property Enterprise Court -- the IPEC -- reminded
prospective litigants (and their representatives) of some important things to
be taken into account when litigating before IPEC.

******************

AIPPI 46th World IP Congress
Special

Annsley was in Rio to attendAIPPI's 46th World IP Congress, to which the
following posts are dedicated (three from two weeks ago, the fourth from past
week).

The General Court has disappointed Enosi
Mastichoparagogon Chiou (The Chios Mastiha Growers Association - EMC) with its
ruling in case T-309/13 (Enosi Mastichoparagogon Chiou v OHIM / Gaba International Holding GmbH), but the notably successful union of mastic producers,
which put the Greek mastic on the international map, may need to draw certain
lessons from this dispute.

Back in 2005, EMC filed an
international trade mark application designating the EU for its the well-known
in Greece “ELMA” mark in connection with, inter alia, ‘Chewing-gums for medical
and dental purposes containing Chios mastic, dental mastic and dental materials
containing Chios mastic, mouth solution for medical, dental and hygienic
purposes containing Chios mastic’ in Class 5. The application was restricted to
indicate Chios mastic as an ingredient of the relevant products, though this
did not prove enough to save the mark.

Gaba International Holding GmbH opposed
the mark on the basis of its earlier CTM No. 000703546 for the word mark ELMEX,
designating inter alia ‘Cosmetic products and preparations; products and
preparations for buccal and dental care’ in Class 3, ‘Pharmaceutical and
hygienical products and preparations; pharmaceutical products and preparations
for buccal and dental care’ in Class 5, as well as ‘Tooth brushes’ in Class 21.

The
Opposition Division upheld the opposition, on the basis of
Article 8(1)(b) of Regulation No 207/2009 and so did the Fourth Board
of Appeal of OHIM by its decision of 26 March 2013 (‘the contested
decision’). As regards the relevant public, the
Board of Appeal found that it consisted of average consumers within the
European Union with an average level of attention. Then, after comparing the
goods in question, it held that they were highly similar and that the signs
displayed an average degree of visual and phonetic similarity, but that it was
not possible to carry out a conceptual comparison because the signs lacked any
meaning. Accordingly, it upheld the Opposition
Division’s decision to the effect that there was a likelihood of confusion
between the marks at issue, within the meaning of Article 8(1)(b) of
Regulation No 207/2009.

The General Court did not depart from
the Board of Appeal’s view. First, it rejected as inadmissible, EMC’s
allegation and supporting evidence regarding the reputation of ELMA, which were
first relied upon by the EMC with its reply before the General Court. The
rejection of those new allegations was based on article 135(4) of the
Rules of Procedure of the General Court, according to which the parties’
pleadings before the Court may not change the subject-matter of the proceedings
before the Board of Appeal, as the Court’s review cannot go beyond the factual
and legal context of the dispute as it was brought before the Board of Appeal.
Moreover, the General Court took the view that there were no special
circumstances to justify the submission before the Court of documents which
could have been presented during the proceedings before OHIM.

The mastic tree - where it all begins

Moving
to address ECM’s single plea that the Board of Appeal had misapplied Article 8(1)(b)
of Regulation No 207/2009, the Court first dealt with the argument that the
consumer of the goods covered by the mark applied for is more prudent and
informed than the average consumer. EMC’s argument was that the goods at issue
are intended for a consumer who, since he has a medical problem or wishes to
protect his teeth, chooses a product with therapeutic properties. The Court disagreed ruling that even
if it were accepted that the goods covered by the mark applied for are also
purchased by certain consumers who select them with particular care, for
medical reasons, that does not alter the fact that they are intended for all
consumers, the great majority of whom display only an average level of
attention when purchasing such goods. In fact, the file shows that the goods
covered by the mark applied for, while ‘mainly’ sold via specialist shops known
as ‘mastihashops’, may also be sold in other shops, such as supermarkets,
drugstores or pharmacies, as the applicant itself acknowledges [this was obviously a key part of the
dispute and the rejection of the relevant argument by the Court paved the way to
uphold the finding of likelihood of confusion].

In comparing the goods involved, the
Court noted that the Board of Appeal in fact compared the goods at issue with
those of the mark applied for in Classes 3 and 21, in the same way as the
Opposition Division. EMC’s
argument in this terrain was that the Board of Appeal failed to take into consideration that,
unlike the goods covered by the earlier mark, the goods covered by the mark
applied for contain ‘Chios mastic’ and that the Board of Appeal did not take
into consideration that ingredient or its reputation.The Court observed that the
similarity between the goods in question must be assessed in relation to the
finished goods, namely, chewing gum, dental mastic, dental materials and mouth
wash respectively, all of which are intended for medical and dental use and
contain Chios mastic, in so far as the applicant’s goods are concerned, and
cosmetic products and preparations and products for oral and dental care, in so
far as the intervener’s goods are concerned. It also accepted that it is also
in the light of the mastic that some consumers choose the goods covered by the
mark applied for and that it is a basic ingredient of the contested goods,
which, however, does not change their intended purpose, use or distribution
channels and which, therefore, has no effect on the assessment of the
similarity between those goods compared and those covered by the earlier mark [another important element in the course of rejecting the 'mastic particularity' argument raised by EMC]. Moreover,
the chewing gum’s PDO status merely designates the geographical origin of a
product and must therefore be considered irrelevant to the assessment of
similarity between the goods in question. Accordingly, it was held that the
Board of Appeal was right to conclude that the goods in question are highly
similar.

In comparing the signs ELMA vs.
ELMEX, the Court noted that it is, in general, accepted that the consumer
attaches greater importance to the beginnings of words, so that resemblance or
difference in the beginnings of words is an important factor for the purposes
of assessment and that in the case of relatively short word marks, the central
elements are as important as the elements at the beginning and end of the sign.
Also, what matters in the assessment of the visual similarity of two word marks
is rather the presence, in each of them, of several letters appearing in the
same order. ELMA has four letters and ELMEX has
five. Those marks begin with the same letters, namely ‘e’, ‘l’ and ‘m’, and
differ only in terms of their end letters, namely ‘a’ for ELMA and ‘e’ and ‘x’
for ELMEX. They are, therefore, relatively short word signs, the first
parts of which are identical, and the difference between the end letters is not
sufficient to counterbalance that identity.

As regards the phonetic comparison,
it should be noted that the marks at issue are similar in so far as they have
two syllables, ‘el’ and ‘ma’ and ‘el’ and ‘mex’ respectively, and share the
same first syllable, ‘el’. Furthermore, the second syllable of each mark starts
with the letter ‘m’, which is pronounced in the same way for both marks. The
fact that the common syllable, ‘el’, appears at the start of the words
increases the phonetic similarity of the signs, while the difference in the
endings of the words is not sufficient to outweigh that similarity.

As
per the conceptual comparison, the Court endorsed the Board
of Appeal’s findings that the word ‘elma’ is an unusual female first name and
is also the name of four small towns in the United States [which, for what it’s
worth, a Greek consumer would have never thought], and that the word ‘elmex’ is
devoid of any meaning. So since ‘elmex’ has no meaning in any of the languages
of the European Union, which is common ground, it is not possible to make a
conceptual comparison of the signs.

The Court also ruled that the fact
that the word ‘elma’ corresponds to the Greek abbreviation ‘EΛMA’, which
derives from the expression ‘Ελληνική μαστίχα’ meaning ‘Greek mastic’, as the
applicant submits, cannot lead to a different conclusion. That line of argumentation
presupposes that the relevant public not only knows the Greek alphabet but also
recognises that abbreviation. Since that alphabet is known outside Greece and
Cyprus only by a more erudite category of consumers, most European consumers
will not be in a position to establish such a connection [this blogger would
think the same would apply to most Greek consumers as well].

In
view of the above, the Board of Appeal’s finding of
likelihood of confusion was considered correct and EMC’s action was dismissed.

It is not uncommon for Greek
entities to file CTMs which have an evocative meaning for Greek consumers, but
would not mean anything to the rest of the Europeans. This blogger understands that Greek entities do not differ from other EU brand owners in that regard. However, in such cases, the
relevant argumentation relying on domestic meaning or significance, even if timely put forward, will generally not suffice
to overcome application of the standard confusing similarity rules of the CTM
system. It would be harder for the brand owner, but might prove more efficient,
to go back to the drawing board and design a different brand including, if
possible, some of the features of the domestic one. If not, then established EU
wide use prior to filing may be the only alternative to an altogether new
brand.

With
BABYDRY being a blurry jurisprudential moment from the forgotten past,
the Office refused the application in the above 2 classes over descriptiveness and consequent lack of
distinctive character of the mark at issue
for the goods concerned within the meaning of Article 7(1)(b) and (c)
of Council Regulation (EC) No 207/2009 of 26 February 2009 on the
Community trade mark

On
appeal, the Second Board of Appeal of OHIM allowed the action in part
in respect of ‘dentifrices’ in Class 3 and ‘preparations for destroying
vermin; herbicides’ in Class 5. However, it upheld the examiner’s
decision with respect to the other goods referred to above on the ground
that the mark sought was descriptive of those goods.

In
particular, it held that the relevant English-speaking public, upon
perceiving the term ‘greasecutter’ of the mark sought to refer to those
goods, would understand immediately and without a doubt that they serve
to dissolve or reduce animal fat. It further stated that, given that the
sign for which registration was sought was descriptive of the
characteristics of the goods designated by it, it therefore lacked
distinctive character in respect of those goods within the meaning of
Article 7(1)(b) of Regulation No 207/2009.

The
Board of Appeal’s reasoning was endorsed by the General Court. In
applying Article 7(1)(c) of Regulation No 207/2009, the General Court
ruled that a determination must be made as to whether, in
the light of the relevant meaning of the word sign at issue, there is,
from the point of view of the relevant public, a sufficiently direct and
specific relationship between that sign and the goods or services for
which registration was sought, such as to enable that public to perceive
immediately and without further thought a description of the goods and
services in question or one of their characteristics. Accordingly, the
descriptive character of a mark must be assessed, first, by reference to
the goods or services in respect of which registration is sought and,
second, by reference to the perception of the relevant public.

The
Court further noted that, for a trade mark which consists of a
neologism or a word produced by a combination of elements to be regarded
as descriptive within the meaning of Article 7(1)(c) of Regulation
No 207/2009, it is not sufficient that each of its components may be
found to be descriptive. The word or neologism itself must be found to
be so. This will be the case when there is no perceptible difference
between the neologism or the word and the mere sum of its parts.

In
the present case, the relevant public was found to comprise both
professionals and average consumers and since the mark sought is made up
of words from the English language, the assessment of its descriptive
character for the purposes of Article 7(1)(c) of Regulation No 207/2009
should be carried out with the English-speaking public in the European
Union in mind.

Assessing
the mark, the General Court ruled that ‘greasecutter’ is made up of a
juxtaposition of two distinct words from the English language, namely
‘grease’ and ‘cutter’. As to the meaning to be attributed to the mark
sought, in paragraph 21 of the contested decision the Board of Appeal
referred to definitions from the Collins Concise Dictionary of
the words of which it is composed, namely ‘grease’, meaning ‘animal fat
in a soft or melted condition’ and ‘cutter’, meaning ‘a person or thing
that cuts, in particular a person who cuts cloth for clothing’. It
further stated that, according to the same source, the verb ‘to cut’ as
used in the expression ‘to cut fat’ means, inter alia, ‘to dissolve’ or
‘to break down’ and that the word ‘greasy’ was also used to refer to
something that resembles grease, such as ‘greasy hair’ or ‘greasy skin’.

Siding with the Board
of Appeal, the General Court found that the mark sought could be
construed by the relevant public only as a combination of the two
descriptive elements of which it is composed and whose meaning does not
extend beyond what each of those elements means separately. Thus, the
mark sought, taken as a whole, conveys to consumers, without further
thought, that the goods covered by the trade mark application are goods
which cut (dissolve) or reduce animal fat or greasiness and is thus
directly descriptive of their nature, properties or intended use.
Moreover, although the term ‘greasecutter’ does not exist per se in
English or other languages of the EU Member States, it is a neologism,
being composed of English words which are easily identifiable by the
English-speaking public, especially since they form a comprehensible
expression obeying English grammatical rules, one which is not unusual
in English-language structure.

EcoLab's"CUTTER"

The
applicant’s argument that ‘cutter’ refers to a tailor or to an object
which cuts or slices was rejected as this would not alter the fact that
one of the possible meanings of the verb cut (from which ‘cutter’ stems)
is ‘to dissolve’ or ‘to break down’, especially given its meaning as
part of the expression ‘to cut fat’. The mere fact that there may be
other terms which describe more precisely the characteristics of
degreasers or scouring preparations, such as ‘degreaser’, ‘grease
remover’ or ‘scouring preparations’, does not rule out the application
of Article 7(1)(c) of Regulation No 207/2009 to the word mark sought,
given the general interest pursued by that provision.

Also, a review of the relevant goods demonstrates that they
encompass goods which, by their nature, composition, packaging or
effects, are intended specifically to remove fat or reduce greasiness.
Thus, contrary to the applicant’s claims, the purpose of ‘bleaching
preparations’ in Class 3 is, as observed by OHIM, to launder, wash or
make clean, with the result that they eliminate or remove any greasy
impurities. The same holds true for ‘polishing and abrasive
preparations’ in the same class. Although it is true, as the applicant
has pointed out, that the latter goods are primarily intended to make a
surface smooth, such an action will necessarily have the effect of
removing any impurities, including possibly grease. Regarding the
‘essential oils’ also in Class 3, the applicant is incorrect in arguing
that they are used solely for their fragrant properties. Some essential
oils have antiseptic and antibacterial properties and are used for
degreasing or disinfectant purposes. Furthermore, contrary to the
applicant’s assertions and as pointed out by OHIM, ‘cosmetics’ and ‘hair
lotions’ in Class 3 may have the effect of removing excess sebum
produced by the skin. These considerations are also valid, in essence,
in relation to disinfectants’ in Class 5, which, by their nature and
intended use, have the effect of purifying or sterilising, inter alia by
removing or reducing greasiness. The same is true of ‘fungicides’
which, as observed by the applicant, do have as their ultimate
purpose the eradication of parasitic fungi. However, that effect
necessarily requires a cleaner surrounding environment due to the
removal of impurities such as fat or greasiness. Lastly, the
‘pharmaceutical and veterinary preparations’, ‘dietetic substances
adapted for medical use’ and ‘food for babies’ in Class 5 include some
which, by their nature, composition or effects, are intended
specifically to address a health issue characterised by the excessive
production of sebum by the skin, excess weight or obesity, or by other
conditions requiring the use of medical, dietetic or nutritional goods
which have the effect of eliminating or reducing fat or grease.

Consequently,
it is reasonable to think that the mark sought will actually be
recognised by the relevant class of persons as a description of one of
the characteristics of those goods.

The applicant's argument that the
Board of Appeal ought to have taken into account the fact that the
trade mark GREASECUTTER Plus was registered by the United States Patent
and Trademark Office (USPTO) for goods in Class 3 and the registrations
as Community marks of the signs GreaseShield and Grease Guardian for
certain goods in Class 7, and GREASE FIGHT for certain goods in Class 3
was also unsuccessful. The Court referred to the autonomous nature of CTM
system stating that this does not change even if a decision relied upon
by the applicant was adopted in a country belonging to the linguistic
area in which the word mark in question originated. In terms of the CTMs
relied upon, the Court reiterated that although, in the light of the
principles of equal treatment and sound administration, OHIM must take
into account the decisions already taken in respect of similar
applications and must consider with especial care whether it should
decide in the same way or not, the way in which those principles are
applied must be consistent with respect for legality. Moreover, for
reasons of legal certainty and, indeed, of sound administration, the
examination of any trade mark application must be rigorous and complete,
in order to prevent trade marks from being improperly registered or
maintained. Such an examination must therefore be undertaken in each
individual case. The registration or maintenance of a sign as a
Community mark depends on specific criteria, which are applicable in the
factual circumstances of the particular case and the purpose of which
is to ascertain whether the sign at issue is caught by a ground for
refusal. Since the legality of the contested decision concerning the
non-registrability of the mark sought as a Community mark for the goods
covered by the application has been established directly on the basis of
Article 7(1)(c) of Regulation No 207/2009, it is clear from the
relevant case-law that it cannot be called into question simply because
the Board of Appeal failed to take into account, in this case, the fact
that the sign GREASECUTTER Plus had been registered in the United
States, or because it failed to follow a certain line of OHIM
decision-making practice, if such practice were to be established.

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